Tale of a Trench-Coat

Luxury retailer Burberry has made excellent use of Facebook’s Timeline feature, using the tool to showcase advertisements and other photographs showing their products over the years.  (If you scan down to the 1910s, you can check out some Burberry-brand aviator suits which I’m pretty sure would be tough to track down today.)  This all sounds well and good, but this is a law blog and not a paid endorsement for Burberry, so you know there’s conflict ahead.

When Bogart, LLC, the company that manages Humphrey Bogart’s celebrity rights, got wind of the fact that Burberry had included a photograph of Bogart wearing a Burberry trench in the film Casablanca they threatened Burberry, claiming violation of right of publicity as well as trademark infringement and unfair competition. Burberry fired back, requesting declaratory judgment of non-infringement.

So who’s correct here?  It’s first important to note that copyright and ownership in the photo itself is not an issue here– Burberry had obtained a proper license to use the photo.  With copyright off the table, the question then becomes whether Burberry’s use of the photo constituted a trademark infringement or, failing that, a violation of Bogart’s right of publicity.

Burberry should have a fairly good argument as to the trademark issue.  It’s not as though they’ve launched a retail campaign with advertisements, signage, and other media that trades on the image.  The use in the Facebook Timeline, they’d argue, when taken in context, is one of many factual statements the company is making about its history.

When it comes to the right of publicity claim, things are less clear.  As the Bose Media Law Blog explains nicely, when it comes to these claims, it’s good to be in California.

Looking past the legal analysis under these doctrines, this case raises much larger questions that brand owners, marketing professionals, and lawyers will want to watch closely.  Depending on how this case proceeds, the court may address important issues regarding social media, advertising, and free speech.

Right now, the lines are a bit blurry (which could help or hurt Burberry here).  It’s clear that Burberry enjoys some commercial advantage by being on Facebook (oh, and it probably doesn’t hurt to have 12 million fans).  But does that mean that all of the company’s activities on Facebook are strictly commercial and not legitimate instances of story-telling or commentary (thus entitled to First Amendment protection)?

Courts are going to face more and more difficult determinations such as this one and must be careful to craft rules that provide clarity, fairness, and workability to all parties involved.  There’s no question that the law should recognize and protect the rights of celebrities as relates to unwelcome endorsements or false sponsorship, but the law should be careful, too, to leave room for story-telling.

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Hollywood, Piracy, and the Future of Media

Mail?  Yeah, we get mail.

Sometimes it’s spam.  Sometimes it’s someone who wants a trademark talking head (with a face for internet radio).

And sometimes, it’s something pretty cool.  Like this infographic from Peter Kim of Paralegal.net.  In particular, I like the statistics toward the end of the graphic about firms who have embraced new technologies.

SOPA Blackout

Wow.  So you take some time off for the holidays (and then catching up from the holidays) and aren’t IP blogging for a little while and then– all of a sudden– the whole web is talking (or not talking, out of protest) about copyright law.

You didn’t have to venture too far beyond a simple Google search (which we, as a planet, only do a billion or so times a day) to notice something strange was going on today.  Visitors to a laundry list of sites including Google, Wikipedia, and Twitter were greeted by blacked-out logos and missing content in protest of SOPA and PIPA, two IP reform bills currently in Congress.

And, according to the Los Angeles Times, this protest might have already had an impact as three co-sponsors of the SOPA and PIPA antipiracy bills have publicly withdrawn their support for the legislation.  From the Times:

Sen. Marco Rubio (R-Fla.) withdrew as a co-sponsor of the Protect IP Act in the Senate, while Reps. Lee Terry (R-Neb.) and Ben Quayle (R-Ariz.) said they were pulling their names from the companion House bill, the Stop Online Piracy Act. Opponents of the legislation, led by large Internet companies, say its broad definitions could lead to censorship of online content and force some websites to shut down.

In a posting on his Facebook page, Rubio noted that after the Senate Judiciary Committee unanimously passed its bill last year, he has “heard legitimate concerns about the impact the bill could have on access to the Internet and about a potentially unreasonable expansion of the federal government’s power to impact the Internet.”

 

Chris Bosh Sues Producer of “Basketball Wives”

Post-relationship drama takes many forms, but federal court litigation under the Lanham Act isn’t typically one of them– unless you’re Miami Heat forward Chris Bosh.  Bosh recently filed suit against the producer of VH1’s “Basketball Wives,” which, as Bosh correctly notes, comprises about as many ex-wives and/or girlfriends as it does “basketball wives” in the term’s purest sense.

At any rate, Bosh is claiming that his ex-girlfriend and the mother of his child is violating his trademark, publicity, and “life rights” by using his name/likeness in connection with the show.  The lawsuit claims that  “[the show] provides these women with a vehicle and worldwide platform” to use the names of players without permission for commercial gain.”

To make out a publicity rights claim under the common law, a plaintiff must plead and prove that a defendant “(1) used plaintiff’s identity; (2) appropriated plaintiff’s name and likeness to defendant’s advantage, commercial or otherwise; (3) lack of consent; and (4) resulting injury.” Eastwood v. Super. Ct., 149 Cal. App. 3d 409, 417 (1983).

To establish the statutory cause of action in California, the plaintiff must also show knowing use of the plaintiff’s name, photograph or likeness for commercial purposes, and a direct connection between the use and the commercial purpose. Id. at 417-18; see also Michaels v. Internet Entmt. Group, Inc., 5 F. Supp.2d 823, 837 (C.D. Cal. 1998).

Although there are some credible defenses here (the weakness of Bosh’s trademark rights in his name; First Amendment; and de minimis use), this case most likely will settle out of court.

In the meantime, despite his pleadings in court, Bosh probably isn’t losing too much sleep over Shaunie O’Neal.  I’d imagine, for the time being, that distinction belongs to Kevin Garnett et al.

Lamebook Sues Facebook

Via Ryan Gile:

You may have heard already that Facebook has been pretty aggressive of late in attempting to enforce its trademark rights– particularly against those using trademarks that incorporate either “–book” or “face-“.

If you’ve visited the website Lamebook, and, like me, were wondering when the other shoe would drop, here’s your update: it has.

But this time, Facebook is on the other side of the “v.”

After receiving a cease-and-desist letter from Facebook, Lamebook has filed a declaratory judgment action seeking a declaration of non-infringement and non-dilution.  One reason for this might be, as Robin Wauters of TechCruch points out, that Lamebook, an Austin-based company, wants to keep the lawsuit in Texas.

Ultimately, the issue in this case may to come down to whether Lamebook is engaged in a valid parody.  This opens up the following question: to the extent that trademark parody doctrine is grounded on free speech/First Amendment concerns, what are Lamebook’s relevant speech interests here?

Comic Book Legend, Plastic Toys Square Off in Dispute over “Super Seven”

At San Diego Comic-Con, comic book legend Stan Lee announced his newest foray into superhero lore: himself.

Lee unveiled his newest project titled “Super Seven” which stars Stan Lee himself as the octogenarian protagonist struggling with writer’s block. After running into a cadre of aliens in the desert (naturally), he assigns them each tasks. Thus, a meta comic book was born.

However, Super 7, a toy manufacturer is having none of it. Super 7 has sent Lee and his company letters detailing their intent to file suit should the project move forward with its proposed name. The announcement at Comic-Con was apparently the last straw as Super 7 filed suit against Lee, POW! Entertainment, A Squared Entertainment, and various other entities alleging trademark infringement and unfair competition.

According to the complaint, Super 7 alleges that both companies intend to use the respective marks Super 7 and “Stan Lee and the Super Seven” for wide-scale media, marketing, and product development. Due to the alleged similarity of the marks and field of use, they request a variety of forms of relief including both an injunction and an award for treble damages.

Trademark issues aside, the real question to be posed here is: Who really wants to read a comic book starring Stan Lee?

Fast Food for Thought

Here’s another one via Jack Greiner. According to the Los Angeles Times, officials in Santa Clara County, California have passed an ordinance that prohibits restaurants from offering toys and other promotions along with meals that fail to meet nutritional guidelines adopted by the county Board of Supervisors.

This raises two questions.  First, does the inclusion of a toy or promotion in a kid’s meal constitute “speech?”  And second, if so, is this restriction on speech constitutional under the First Amendment?

As to the first question, the answer is probably “yes.”  When a restaurant selects a toy or series of toys to include in its kid’s meals, it constitutes a form of advertising.  Most advertising constitutes “commercial speech” under the First Amendment, which means that a court considering the constitutionality of the Santa Clara County law would apply the Central Hudson test:

Under Central Hudson, a government restriction on advertisements or other commercial speech is permissible only on a showing that (1) the advertising is misleading, (2) the government interest in regulation is substantial, (3) the regulation directly advances that interest, and (4) the regulation is not more extensive than necessary.

Under this test, the restaurants affected by this ordinance would probably prevail in making the argument for its unconstitutionality.

Public Enemy Number One?

So, ultimately, the question really comes down to whether a kid’s meal toy is a form of speech.  Although my initial hunch is that it is a form of speech, namely advertising, I imagine there are good arguments on the other side.  In any case, it will be interesting to see where this goes.  Although the founding fathers may never have envisioned the “Hamburglar” as the focus of serious constitutional inquiry, we may see courts wrestling with these issues in the future.

PTL on the Radio

It’s been a while since my glory days as a college radio DJ, but I am back on the air.  And this time, instead of playing obscure music for my following of 20 or so listeners, I’m talking about trademark law (the trademark parody doctrine to be specific) on Trademark Law Radio.

Supreme Court Agrees to Hear Texting Case

You may have heard the news earlier this week that the Supreme Court has agreed to hear a case concerning an employee’s privacy rights in text messages sent on a work-provided pager.

This case involves the Ontario Police Department in Ontario, California, which provided the pagers to its officers.  The issue arose when the Department ordered transcripts of the text messages sent by Sgt. Jeff Quon.  Many of Sgt. Quon’s text messages turned out to be personal (and, in many cases, “sexually explicit”) in nature.  Sgt. Quon and some the individuals with whom he corresponded via text message sued, arguing that their Fourth Amendment rights had been violated. The Ninth Circuit Court of Appeals found that the employees had a “reasonable expectation of privacy” in the text messages sent using the pagers.

So the interesting technology question that arises is this: are text messages fundamentally different than emails such that an employer could legitimately monitor one (emails) and not the other (text messages)?

Jack Greiner of “Jack out of the Box” has an nice analysis of one of the key distinctions between texts and emails.  It’s about ownership of the technological medium:

“…text messages are different than e-mail messages. Unlike e-mail, text messages never pass through a corporate communications network; always are stored with a third party provider; and often are transmitted via personal cell phones. So it’s not exactly like the employer is monitoring its own equipment. And the employer’s right to monitor, under applicable federal statutes, is tied to the fact that it owns the equipment. So, the statute by its terms probably doesn’t apply to text messages.”

It will be interesting to see how the Supreme Court addresses this technological disctinction and what sort of implications this has for employers as they draft company policies regarding use of pagers and cell phones.